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On February 2 2016 the Barcelona Court of Appeal issued a judgment confirming a previous decision of Barcelona Commercial Court No 4, which dismissed a product-by-process patent infringement action filed by Oatly AB against Liquats Vegetals, SA, manufacturer and retailer of oat milk, and Casa Santiveri, SL, Productora Alimenticia General Española, SA and Nutrición & Sante Iberia, SL, all clients of Liquats and oat milk retailers.

Facts

Oatly asserted the infringement of, among other things, the product-by-process claim of its patent EP0731646 – ES2154684 ('ES'684') which is related to an oat milk and its manufacturing process, arguing that although it had no knowledge of the process used by Liquats, bearing in mind that its product was supposedly equal to the product claimed in the patent, the product-by-process claim and also other claims were infringed by the defendants.

The defendants' main arguments in the first-instance proceedings were that:

Liquats's manufacturing process was different from the patented process;

as a result of this difference, the resulting oat milk was different from the oat milk covered by the product-by-process claim (Liquats's product did not have intact β-glucans from the starting material); and

particularly relevant was the fact that Liquats's process included the use of a β-glucanase enzyme, which was something expressly excluded by the patentee before the European Patent Office (EPO).

The main arguments of Oatly's appeal against the first-instance judgment were that:

the court had incorrectly interpreted the scope of protection of Claim 1 (the product-by-process claim) of patent ES'684; and

the court did not assess the evidence of the proceeding properly, and its interpretation of the concept of 'intact β-glucans' was incorrect.

Appeal decision

In its judgement the Barcelona Court of Appeal analysed both grounds jointly. It stated that, in regard to a product-by-process claim, it was unreasonable to resolve the infringement case in a different way from the validity case. In fact, the appeal court stressed that it considered it highly relevant to use the patentee's allegations before the EPO Opposition Division in order to defend the patent's novelty.

Before the EPO the patentee defended the patent's novelty by interpreting the concept 'intact β-glucans' on the basis that the manufacturing process was mechanical only, not chemical. The patentee related the concept to specifically not using enzymes with β-glucanase function.

According to the evidence submitted in the proceedings:

the β-glucans of Liquats's oat milk weighed approximately 10 kilodaltons (kDa), while the β-glucans of the oat before starting the process weighed approximately 1400kDa; and

this was consistent with the fact that, as proved, Liquats's manufacturing process used β-glucanase enzimes.

Therefore, the appeal court concluded as follows:

The process used by Liquats was different from the process covered by the patent.

As a result of a different process, the product was also different from the product covered by the product-by-process claim. Specifically, the product did not contain "intact β-glucans from the starting material" in the terms of the patent.

In order to interpret the term 'intact β-glucans', it was appropriate to review what the patentee had said before the EPO Opposition Division.

There was no reason to defend a different concept of 'intact β-glucans' from that defended before the EPO, as Oatly had aimed to do, particularly when the patentee had not even tried to explain the change.

As Claims 1 (product-by process) and 2 (process claim) of patent ES'684 were not infringed by the defendants, neither were the dependent Claims 3 to 7.

Finally, the Barcelona Court of Appeal sentenced Oatly to pay the costs. Oatly has not filed an extraordinary appeal, so the judgment is definitive.